Trials@uspto.gov Paper No. 8 571-272-7822 Entered: September 12, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE ____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

NHK SPRING CO., LTD., Petitioner,

v.

INTRI-PLEX TECHNOLOGIES, INC.,

Patent Owner. ____________

Case IPR2018-00752

Patent 6,183,841 B1 ____________

Before CHRISTOPHER M. KAISER, ELIZABETH M. ROESEL, and MICHELLE N. ANKENBRAND, Administrative Patent Judges. ANKENBRAND, Administrative Patent Judge.

DECISION

Denying Institution of Inter Partes Review 35 U.S.C. § 314(a)

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I. INTRODUCTION

NHK Spring Co., Ltd. (“Petitioner”) requests an inter partes review of

claims 1, 4, 7, and 10 of U.S. Patent No. 6,183,841 B1 (“the ’841 patent,”

Ex. 1001). Paper 1 (“Pet.”). Intri-Plex Technologies, Inc. (“Patent Owner”)

timely filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).

Based upon the particular circumstances of this case, we exercise our

discretion under 35 U.S.C. §§ 314(a) and 325(d) and do not institute an inter

partes review of the challenged claims.

II. BACKGROUND

A. Related Matters

The parties identify Intri-Plex Technologies, Inc. v. NHK

International Corp., 3:17-cv-01097-EMC (N.D. Cal.) as a related matter

under 37 C.F.R. § 42.8(b)(2). Pet. 2; Paper 4, 2.

B. The ’841 patent

The ’841 patent, titled “Optimized Low Profile Swage Mount Base

Plate Attachment of Suspension Assembly for Hard Disk Drive,” issued on

February 6, 2001, based on an application filed April 21, 1998. Ex. 1001,

[22], [45], [54]. The ’841 patent relates to a base plate for attaching a

suspension assembly to an actuator arm in a hard disk drive. Id. at Abstract.

The base plate includes a flat flange portion and a cylindrical hub portion.

Id. at 3:41–42. The base plate has several parameters, including a base plate

thickness (TBP), hub overall height (HH), hub inner diameter (DID), base plate

length (LBP), base plate width (WBP), hub outer diameter (DOD), hub inner

surface depth (HIS), base plate opening diameter (DBP), hub radial width

(WH, which is (DOD - DID)/2), and a hub counter bore depth (HCB). Id. at

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3:48–55, 4:3–18. The ’841 patent states that “[t]he optimum parameters . . .

are such as to satisfy the following equation:”

𝑊𝐻

𝑇𝐵𝑃·

𝑊𝐻

(𝐻𝐼𝑆+𝐻𝐻 −𝐻𝐶𝐵) 2⁄≥ 5

Id. at 3:56–63. The calculation on the left-hand side results in a Geometry

Metric Value (id. at 4:18), and the equation is satisfied when the Geometry

Metric Value is less than or equal to five (id. at 3:60).

The ’841 patent provides a table, reproduced below, that compares an

exemplary inventive base plate to a prior art base plate.

Id. at 4:3–18. The table above sets forth the dimensions of the parameters

that form the prior art and inventive base plates, and the Geometry Metric

Value that results for each after applying the values for WH, TBP, HIS, HH,

and HCB to the equation. According to the table, the dimensions of the prior

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art base plate result in a Geometry Metric value of 3.308, which does not

satisfy the equation, whereas the dimensions of the exemplary inventive base

plate result in a Geometry Metric Value of 7.810, which satisfies the

equation. Id.

According to the ’841 patent, a base plate with parameters that satisfy

the equation has several advantages, including that it reduces gram load

change inherent in swaging and allows a large retention torque in “low hub

height configurations that offer limited retention torque in a standard hub

geometry.” Id. at 2:27–30. The ’841 patent also states that such a base plate

eliminates the neck region associated with prior art base plates that was

known to result in bending moment decoupling of the hub and flange. Id. at

4:23–65, Figs. 3, 4.

C. Illustrative Claim

Claim 1 is independent and illustrative of the claimed subject matter.

Claim 1 recites:

1. An optimized low profile base plate for attachment of a suspension assembly to an actuator arm in a hard disk drive comprising:

a flange having a flange thickness (TBP); and,

a hub having, a hub height (HH), a hub radial width WH, a land height hub inner surface depth (HIS), and a lead in shoulder hub counter bore height (HCB);

wherein:

𝑊𝐻

𝑇𝐵𝑃·

𝑊𝐻

(𝐻𝐼𝑆+𝐻𝐻 −𝐻𝐶𝐵) 2⁄≥ 5

Ex. 1001, 5:41–53.

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D. The Asserted Grounds of Unpatentability

Petitioner challenges the patentability of claims 1, 4, 7, and 10 of the

’841 patent based on the following grounds:

Reference(s) Statutory Basis Claims Challenged

Braunheim1 § 102(e) 1, 4, 7, 10

Braunheim § 103 1, 4, 7, 10

Braunheim and Applicant Admitted Prior Art (AAPA)2

§ 103 1, 4, 7, 10

Pet. 4. Petitioner relies on the Declaration of David B. Bogy, Ph.D.

(Ex. 1002) to support its asserted grounds of unpatentability. Patent Owner

disputes that Petitioner’s asserted grounds renders any of the challenged

claims unpatentable. See generally Prelim. Resp.

III. ANALYSIS

A. Level of Ordinary Skill in the Art

Petitioner, citing Dr. Bogy’s testimony, asserts that a person of

ordinary skill in the art at the time of the invention of the ’841 patent “would

have had at least a Bachelor’s degree in mechanical engineering, with at

least two years of work and/or academic experience in the design and/or

study of disk drive components.” Pet. 4 (citing Ex. 1002 ¶ 13).

At this stage of the proceeding, Patent Owner does not dispute

Petitioner’s assertion regarding the level of ordinary skill in the art, which

1 U.S. Patent No. 5,689,389, filed Jan. 22, 1996, and issued Nov. 18, 1997 (Ex. 1003).

2 Petitioner relies on the dimensional values set forth for the parameters of

the base plate in the ’841 patent’s table that are described as typical prior art dimensions. See, e.g., Pet. 15 (“Ground 3 (Braunheim in view of AAPA) is non-cumulative [to Grounds 1 and 2] because AAPA expressly specifies a ‘typical’ prior art value for the flange thickness (TBP).”).

IPR2018-00752 Patent 6,183,841 B1

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we adopt for purposes of this decision. Further, based on the information

presented at this stage of the proceeding, we consider Petitioner’s declarant,

Dr. Bogy, qualified to opine from the perspective of an ordinary artisan at

the time of the invention. See Ex. 1002 ¶¶ 3–11 (Dr. Bogy’s background

and qualifications), Attachment A (Dr. Bogy’s curriculum vitae).

B. Claim Construction

For an unexpired patent, the Board interprets claims using the

“broadest reasonable construction in light of the specification of the patent.”

37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,

2144–46 (2016). In this proceeding, however, Patent Owner filed a Motion

for District Court-Type Claim Construction (Paper 6), in which it certified

under 37 C.F.R. § 42.100(b) that the ’841 patent would expire within 18

months of March 13, 2018 (i.e., the entry of the Notice of Filing Date

Accorded to Petition). Paper 6, 2. Petitioner agrees that the claims of the

’841 patent should be interpreted “similar to that of a District Court’s

review.” Pet. 11–12. Because the ’841 patent will expire before we would

enter a final written decision, we find that district court-type claim

construction, rather than broadest reasonable construction, applies to this

proceeding. See In re CSB-Sys. Int’l, Inc., 832 F.3d 1335, 1340–42 (Fed.

Cir. 2016) (“[C]onsistent with our prior precedent and customary practice,

we reaffirm that once a patent expires, the PTO should apply the Phillips

standard for claim construction.”); Black & Decker, Inc. v. Positec USA,

Inc., 646 Fed. App’x 1019, 1024 (Fed. Cir. 2016); see also Amendments to

the Rules of Practice for Trials before the Patent Trial and Appeal Board, 81

Fed. Reg. 18,750, 18,750 (Apr. 1, 2016) (amending 37 C.F.R. § 42.100(b) to

allow a district court-style claim construction approach “for claims of

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patents that will expire before entry of a final written decision”). Under the

district court standard, claim terms “are generally given their ordinary and

customary meaning,” which is the “meaning that the term would have to a

person of ordinary skill in the art . . . at the time of the invention” when read

“in the context of” the specification and prosecution history of the patent.

Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc)

(internal quotation marks and citation omitted).

For purposes of this proceeding, Petitioner adopts the parties’ agreed-

upon constructions from the related district court litigation. Pet. 13–14.

Patent Owner does not dispute the agreed-upon constructions, which Patent

Owner notes the district court has adopted. Prelim. Resp. 21. Patent Owner

contends, however, that claim construction is not necessary to resolve the

parties’ dispute at this stage of the proceeding. Id. at 22. We determine that

no claim term requires express construction to resolve any controversy at

this stage of the proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,

200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed

that are in controversy, and only to the extent necessary to resolve the

controversy.”).

C. Asserted References

Before turning to the parties’ arguments, we provide a brief summary

of the asserted references.

1. Braunheim (Ex. 1003)

Braunheim discloses a low profile swage mount for connecting a disk

drive actuator arm to the load beam of a head suspension assembly.

Ex. 1003, Abstract. The swage mount includes a base plate formed on one

side with an opening and a hollow hub disposed on the opposite side. Id.

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“The hub is formed with an inner swaging surface having a diameter

approximating the diameter of the base plate opening to give the swage

mount torq[u]e retention characteristics comparable to conventional swage

mounts much larger in size.” Id.

Braunheim discloses a number of parameters for the swage mount,

including a base plate thickness (TBP), hub overall height (HH), hub inner

diameter (DID), base plate length (LBP), base plate width (WBP), hub outer

diameter (DOD), hub inner surface depth (HIS), base plate opening diameter

(DBP), and hub radial width (WH). Id. at 6:34–49 (Table 1). Table 1 of

Braunheim, which is reproduced below, provides approximate dimensions

for all of the parameters of a preferred embodiment of the swage mount.

TABLE 1

SYMBOL NAME DIMENSION (MM)

LBP Base Plate Length 5.080

WBP Base Plate Width 5.080 TBP Base Plate Thickness 0.203 DBP Base Plate Opening Diameter 2.312 DID Hub Inner Diameter 2.083 DOD Hub Outer Diameter 2.731 HH Hub Overall Height 0.145 HIS Hub Inner Surface Depth 0.094 WH Hub Radial Width 0.648

Id. at 6:37–49. According to Braunheim, “by adhering to particular

dimensional relationships” between the parameters, the swage mount “may

be reduced in size to exhibit a vertical profile nowhere anticipated in the art

while maintaining torque retention of magnitudes comparable to much larger

swage mount profiles.” Id. at 6:4–10. In particular, Braunheim describes

the relationship between the base plate opening diameter (DBP) and the hub

inner diameter (DID) and the relationship between hub height (HH) and hub

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inner surface depth (HIS) as providing the advantages to its disclosed swage

mount. Id. at 6:11–33, 7:29–34.

Braunheim further explains that although the base plate thickness

(TBP) “is on the order of 0.20 millimeters,” it “may be reduced further in

accordance with the present invention.” Id. at 5:28–31. Braunheim

describes the relationship that exists between the hub wall radial thickness

and the base plate thickness, id. at 3:15–18, 30–31, and states that the

invention overcomes the conventional assumption that “the hub can be no

thicker than the base plate thickness” by maintaining the relationships

between DBP and DID, and HH and HIS, id. at 7:41–52.

2. Applicant Admitted Prior Art (“AAPA”)

Petitioner relies on the dimensional values set forth for the parameters

of the base plate in the ’841 patent’s table that are described as typical prior

art dimensions. Ex. 1001, 4:3–18. In particular, for its first ground––

anticipation based on Braunheim––Petitioner points to the “typical” known

hub counter bore height (HCB) of 0.038 mm from the ’841 patent’s table.

See, e.g., Pet. 22. For its second ground––obviousness over Braunheim––

Petitioner, in an alternative application of Braunheim, relies on the 0.038

value for HCB from the ’841 patent’s table. See id. at 43–45. Also for its

second ground, and for its third ground (obviousness over Braunheim in

view of the AAPA), Petitioner directs us to the “typical” prior art base plate

thickness (TBP) of 0.150 mm from the ’841 patent’s table. See, e.g., id. at

40–41 (obviousness over Braunheim in view of the knowledge of the person

of ordinary skill in the art), id. at 46 (obviousness over Braunheim in view of

the AAPA).

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D. Petitioner’s Challenges to the ’841 Patent

Petitioner contends that claims 1, 4, 7, and 10 of the ’841 patent are

unpatentable as anticipated by Braunheim, obvious over Braunheim alone,

and obvious over Braunheim in view of the AAPA. See Pet. 15–50. In

brief, Petitioner argues that Braunheim anticipates the challenged claims

because, once supplemented to include a typical AAPA value for HCB, or

pursuant to Braunheim’s own suggestions (for TBP), Braunheim discloses a

base plate having dimensions that satisfy the equation recited in the

challenged claims. See, e.g., Pet. 15–26 (claim 1). In addition, Petitioner

argues that the challenged claims would have been obvious over Braunheim

because reducing HCB or TBP would have been within the knowledge of the

ordinary artisan. See id. at 37 (relying on anticipation analysis for reduction

of TBP), id. at 42–46 (asserting that the AAPA as background knowledge

would have led the skilled artisan to reduce HCB with a reasonable

expectation of success in achieving a Geometry Metric Value of ≥ 5). In

addition, Petitioner contends that the challenged claims would have been

obvious over Braunheim in view of the AAPA because the AAPA expressly

specifies a “typical” prior art value for TBP. See id. at 46–49. In all three

grounds, Petitioner relies on the parameters set forth in Braunheim’s Table 1

and directs us to the typical prior art dimensions for HCB and TBP set forth in

the ’841 patent’s table. See supra § II.B.2.

Patent Owner contends that Braunheim does not anticipate the

challenged claims and that the challenged claims would not have been

obvious over Braunheim or the combination of Braunheim and the AAPA.

Prelim. Resp. 39–54. First, however, Patent Owner contends that we should

exercise our discretion under 35 U.S.C. § 325(d) to deny institution. Id. at

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22–36. Patent Owner argues that we should deny institution under § 325(d)

because “the Petition simply repackages and restyles arguments made by the

Examiner and overcome by [Patent Owner] during prosecution of the

application that led to the grant of the ’841 patent and that are being

simultaneously asserted by Petitioner in the District Court case.” Id. at 4.

Patent Owner also argues that we should deny institution under § 314(a)

because Petitioner filed the Petition shortly before the time-bar under

§ 315(b) expired and because proceeding in parallel with the district court

litigation is an inefficient use of our time and resources. Id. at 36–39. For

the reasons explained below, we agree with Patent Owner and exercise our

discretion under 35 U.S.C. §§ 314(a), 325(d) to deny institution.

1. Discretion Under 35 U.S.C. § 325(d)

Institution of inter partes review is discretionary. See Harmonic Inc.

v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is

permitted, but never compelled, to institute an IPR proceeding”). Section

325(d) gives us express discretion to deny a petition when “the same or

substantially the same prior art or arguments previously were presented to

the Office.” 35 U.S.C. § 325(d). In evaluating whether to exercise our

discretion under Section 325(d), we weigh the following non-exclusive

factors: “(a) the similarities and material differences between the asserted

art and the prior art involved during examination; (b) the cumulative nature

of the asserted art and the prior art evaluated during examination; (c) the

extent to which the asserted art was evaluated during examination, including

whether the prior art was the basis for rejection; (d) the extent of the overlap

between the arguments made during examination and the manner in which

Petitioner relies on the prior art or Patent Owner distinguishes the prior art;

IPR2018-00752 Patent 6,183,841 B1

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(e) whether Petitioner has pointed out sufficiently how the Examiner erred in

its evaluation of the asserted prior art; and (f) the extent to which additional

evidence and facts presented in the Petition warrant reconsideration of prior

art or arguments.” Becton, Dickinson & Co. v. B. Braun Melsungen AG,

IPR2017-01586, slip op. at 17–18 (Paper 8) (PTAB Dec. 15, 2017)

(informative).

We analyze these factors below as they apply to the record in this

proceeding, and find that, on balance, the factors weigh in favor of

exercising our discretion under 35 U.S.C. § 325(d). We also decide, for

reasons explained below, that an additional factor supports denying

institution under § 314(a).

(a) The similarities and material differences between the asserted art and

the prior art involved during examination

As explained above, Petitioner relies on Braunheim as anticipating

claims 1, 4, 7, and 10, and Braunheim, as well as Braunheim and the AAPA

for its arguments that claims 1, 4, 7, and 10 would have been obvious. Pet.

4. As Petitioner acknowledges, the Examiner considered Braunheim and the

AAPA during prosecution of the ’841 patent. Id. at 7 (“The primary

reference (Braunheim) in the proposed grounds of this Petition was applied

by the Examiner during prosecution of the ’841 patent.”), 8–9 (explaining

that the Examiner relied on “a side-by-side comparison of a ‘typical’

embodiment’s dimensions versus ‘typical’ prior art dimensions admitted by

the ’841 [p]atent”); see also Ex. 1001, [56] (listing Braunheim among the

References Cited); Ex. 1004, 47, 67 (rejecting all pending claims for

obviousness over “applicant’s admission of the state of the prior art in the

table [in the ’841 patent specification] . . . in view of Brooks . . . (U.S.

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5,717,545) and Braunheim (U.S. 5,689,389)”). Thus, the Examiner

considered the prior art that Petitioner asserts here.

(b) The cumulative nature of the asserted art and the prior art evaluated during examination

As explained above, Petitioner relies on the same prior art that the

Examiner considered during prosecution of the ’841 patent. Because it is the

same, we need not address whether the AAPA and Braunheim are

cumulative of the art that the Examiner considered.

(c) The extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for

rejection

As Patent Owner points out, the Examiner cited Braunheim and the

AAPA, along with Brooks, during examination to reject all pending claims

for obviousness in the initial Office Action and the Final Office Action. See

Prelim. Resp. 25–26; Ex. 1004, 47 (initial Office Action), 67 (Final Office

Action). In those rejections, the Examiner relied on the AAPA dimensions

for each of the parameters listed in the ’841 patent’s table. See, e.g.,

Ex. 1004, 47–48. The Examiner explained that the AAPA dimensions for

HCB and WH were the only AAPA dimensions that differed from the

dimensions recited in the claims. Id. at 49. The Examiner concluded that a

person of ordinary skill in the art would have increased HCB based on the

teachings in Brooks and would have increased slightly WH based on

Braunheim’s disclosure. Id. at 48–49.

In other words, the Examiner (1) started with the AAPA dimensions

for the base plate parameters, and (2) increased or decreased dimensions for

certain parameters (i.e., HCB and WH) in the equation recited in the claims

based on the prior art teachings in Brooks and Braunheim in order to arrive

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at the optimized relationship recited in the claims, i.e., a Geometry Metric

Value of ≥ 5. See id. at 47–49. Accordingly, we find that the Examiner

evaluated Braunheim and the AAPA during examination and substantively

applied their teachings to reject the ’841 patent’s claims.

(d) The extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior

art or Patent Owner distinguishes the prior art

Although Petitioner argues to the contrary, we determine that the

findings the Examiner made during prosecution and the arguments Petitioner

makes here are substantially the same. As discussed above, Petitioner

contends Braunheim anticipates the challenged claims by pointing to the

dimensions Braunheim discloses for most of the base plate parameters and

by relying on the value for HCB that the AAPA discloses. For its

obviousness grounds, Petitioner relies on Braunheim’s dimensions, as well

as the typical values for HCB and TBP that the AAPA discloses.

Petitioner, anticipating Patent Owner’s argument under § 325(d),

contends that it relies on Braunheim “in an entirely different manner” than

the Examiner relied on Braunheim during prosecution. Id. at 7–8. In

particular, Petitioner contends that the asserted grounds “rely primarily on a

base plate exemplified in Braunheim (Table 1) and using the metric formula

of the challenged claims to ‘calculate a metric value’ from its dimensions,”

whereas the Examiner omitted a metric value calculation “and instead

rel[ied] on a side-by-side comparison of a ‘typical’ embodiment’s

dimensions versus ‘typical’” AAPA dimensions set forth in the ’841 patent.

Id. at 8–9; see also Ex. 1002 ¶¶ 39, 41 (Dr. Bogy’s testimony to the same

effect).

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We disagree. Patent Owner argues persuasively that the Petition

“simply applies the same references in the opposite order.” Prelim. Resp.

33–34. As explained above, in rejecting the claims, the Examiner started

with the AAPA base plate dimensions from the ’841 patent’s table and

modified two of them (including WH) based on Braunheim to arrive at a

value for the metric equation of ≥ 5. Ex. 1004, 47–48. Here, Petitioner

starts with Braunheim’s base plate dimensions, including WH, and either

supplements those dimensions with HCB as disclosed by the AAPA or

modifies the value for TBP based on the AAPA. For example, in arguing that

Braunheim anticipates the challenged claims, Petitioner directs us to the

parameters Braunheim’s Table 1 discloses for a base plate (e.g., TBP, WH,

HIS, and HH). Pet. 21. Because Braunheim does not disclose HCB, Petitioner

uses the “‘typical’ known HCB admitted by the ’841 Patent”—0.038 mm. Id.

at 22. Similarly, in arguing that Braunheim and Braunheim in view of the

AAPA would have rendered the challenged claims obvious, Petitioner relies

on the values in Braunheim’s Table 1 for all of the parameters in the metric

equation except TBP. See, e.g., id. at 37 (referring back to anticipation

argument). Petitioner then directs us to the “‘typical prior art” TBP of 0.150

mm set forth in the ’841 patent’s table. Id. at 40, 47.

Thus, Petitioner’s analysis here is substantially the same as the

Examiner’s during prosecution: both rely upon prior art values for base

plate parameters and conclude that the ordinary artisan would have modified

certain of the values for parameters in the metric equation to achieve the

relationship of ≥ 5 that is recited in the claims.

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(e) Whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art

Petitioner contends that the Examiner “overlooked” Braunheim’s

Table 1 and that “[h]ad the Examiner considered the Braunheim base plate

and applied its dimensions to the claimed metric formula, the claims would

not have been allowed.” Pet. 8, 11. The flaw in Petitioner’s argument,

however, is that none of Petitioner’s asserted grounds relies solely on

Braunheim’s Table 1 values. Rather, as previously explained, Petitioner

relies on Braunheim’s Table 1 for some of the parameters of the metric

equation recited in the challenged claims and relies on the AAPA for other

parameters. See, e.g., Pet. 22, 40, 47. Petitioner, therefore, does not point

out sufficiently how the Examiner erred in evaluating the asserted prior art.

(f) The extent to which additional evidence and facts presented in the Petition warrant reconsideration of prior art or arguments

For the reasons discussed in subsection (d) above, we find that

Petitioner’s arguments substantially overlap the Examiner’s findings during

examination. Petitioner explains that the Petition presents declaratory

evidence—Dr. Bogy’s declaration—that the Office did not consider during

examination. Pet. 7. Although Dr. Bogy’s declaration was not before the

Examiner, the declaration does not persuade us that we should reconsider

Braunheim, the AAPA, or Petitioner’s arguments because the declaration is

substantially similar to the Petition (i.e., contains the same arguments that

we find substantially overlap the Examiner’s findings)3 and Dr. Bogy fails to

3 Although Dr. Bogy’s declaration is substantially similar to the Petition in

most respects, Dr. Bogy’s testimony differs from the Petition with regard to HCB. For Ground 1, Petitioner contends that Braunheim anticipates an HCB value that satisfies the metric equation recited in the claims. Pet. 15–23.

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support his testimony with objective evidence. For example, Dr. Bogy

testifies that one of ordinary skill in the art would have changed certain

values of Braunheim’s base plate parameters based on the AAPA and

suggestions in Braunheim. See, e.g., Ex. 1002 ¶¶ 54–61, 62–65. But

Dr. Bogy fails to explain why a change in the value of one parameter would

not have affected the other parameters of Braunheim’s base plate, including

DBP, DID, HH, and HIS, which Braunheim identifies as having “unexpected

relationship[s] deemed critical to the successful operation of the swage

mount.” Ex. 1003, 6:11–33; see also id. at 7:29–31 (“Important advantages

result from constructing the swage mount . . . with the aforedescribed

relationships between DBP and DID, and between HH and HIS.”); id. at 7:49–

52 (“[B]y maintaining the aforedescribed relationships between DBP and DID,

and HH and HIS, the profile of the swage mount . . . may be greatly reduced

while still maintaining sufficient torque retention for fastening the actuator

arm to the load beam.”).

Further, as support for adjusting the value of TBP from that disclosed

in Braunheim’s Table 1 to something less than 0.145 mm, Petitioner argues

that “[t]he only lower limit to [TBP] suggested by Braunheim is the hub

height (HH).” Pet. 25 (citing Ex. 1003, 2:59–60, 7:41–43 (“[T]he hub can be

no thicker than base plate thickness.”)). Dr. Bogy offers similar testimony in

that regard. Ex. 1002 ¶¶ 63, 65. Absent from Petitioner’s analysis and

Dr. Bogy’s testimony, however, is a persuasive reason why the skilled

artisan would have understood Braunheim’s disclosure of TBP as the upper

But Dr. Bogy testifies that “one of ordinary skill in the art would have found it obvious to include an HCB of 0.038 mm [the AAPA HCB] in Braunheim’s base plate.” Ex. 1002 ¶ 58; see id. ¶ 61.

IPR2018-00752 Patent 6,183,841 B1

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limit for hub thickness to necessarily disclose the converse—i.e., that hub

thickness is the upper limit for TBP. Moreover, Petitioner and Dr. Bogy do

not explain why Braunheim’s disclosure of an upper limit for hub thickness

means hub height, HH, as opposed to hub radial thickness, WH, in view of

Braunheim’s disclosure that a relationship exists between WH and TBP. See

Ex. 1003, 3:30–31 (disclosing relationship between WH and TBP). Rather,

Petitioner and Dr. Bogy simply presume that Braunheim’s disclosure that

“the hub can be no thicker” than TBP refers to HH not WH. Pet. 25; Ex. 1002

¶ 63 (“Specifically, because ‘the hub can be no thicker than the [base plate]

thickness,’ the lower limit for the [base plate] thickness (TBP) is the hub

height (HH).”).

Given the foregoing, we are not persuaded that we should reconsider

Braunheim or the arguments Petitioner presents in the Petition.

2. Weighing the 325(d) Factors

Taking into account the above factors, we find that the factors weigh

in favor of exercising our discretion and denying institution under § 325(d).

Importantly, the asserted art is a subset of the same prior art that the

Examiner applied in rejecting the claims during prosecution. Further, the

arguments Petitioner advances in its Petition are substantially similar to the

findings the Examiner made to reject the claims, and that Patent Owner

overcame. Thus, we deny institution under § 325(d). Although a weighing

of the § 325(d) factors alone is sufficient to support an exercise of our

discretion to deny institution, we also consider Patent Owner’s additional

arguments under § 314(a).

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3. Discretion under § 314(a)

Patent Owner contends that two additional factors weigh in favor of

denying institution under § 314(a). First, Patent Owner argues that

Petitioner knew about the ’841 patent for more than 10 years, yet provides

no explanation for why it waited so long to file the Petition. Prelim. Resp.

37–38. We are not persuaded that this lapse in time favors denying review.

As Patent Owner acknowledges, Petitioner filed the Petition shortly before

the one-year bar in 35 U.S.C. § 315(b) expired. The Petition, therefore, was

timely, and Patent Owner does not apprise us of any tactical advantage, or

opportunity for tactical advantage, that Petitioner gained by waiting to file

the Petition. Thus, we find this proceeding distinguishable from the facts in

General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case

IPR2016-01357 (Paper 19) (PTAB Sept. 6, 2017) (precedential as to

§ II.B.4.i) (“General Plastic”)—the decision on which Patent Owner relies

to support its argument regarding the timing of the Petition.

Second, Patent Owner argues that instituting an inter partes review

“ultimately would be inefficient,” given the status of the district court

proceeding between the parties. Prelim. Resp. 38–39. In particular, Patent

Owner directs us to the Scheduling Order in the district court proceeding,

which sets a trial date of March 25, 2019. Id. at 39. Patent Owner further

notes that because the ’841 patent has expired, we will apply the same

standard for claim construction as the district court (which already has

construed the ’841 patent claim terms). Id. at 38. Patent Owner also

represents that Petitioner relies on the same prior art (Braunheim and the

AAPA) and arguments in its district court invalidity contentions as asserted

in the Petition. Id. at 1. Thus, Patent Owner argues, the district court

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proceeding will analyze the same issues and will be resolved before any trial

on the Petition concludes. Id. at 39. Patent Owner asserts that such

inefficiency supports denying the Petition.

We agree. First, we note that there is no “intent to limit discretion

under § 314(a), such that it is . . . encompassed by § 325(d).” Gen. Plastic,

Paper 19, 18–19. Thus, simply because we exercise our discretion to deny

the Petition under § 325(d) does not mean that we cannot consider and

weigh additional factors that favor denying institution under § 314(a).4

Second, Patent Owner argues persuasively that instituting a trial under the

facts and circumstances here would be an inefficient use of Board resources.

The district court proceeding, in which Petitioner asserts the same prior art

and arguments, is nearing its final stages, with expert discovery ending on

November 1, 2018, and a 5-day jury trial set to begin on March 25, 2019.

Ex. 2004, 1. A trial before us on the same asserted prior art will not

conclude until September 2019. Institution of an inter partes review under

these circumstances would not be consistent with “an objective of the

AIA . . . to provide an effective and efficient alternative to district court

litigation.” Gen. Plastic, Paper 19, 16–17. Accordingly, we find that the

advanced state of the district court proceeding is an additional factor that

weighs in favor of denying the Petition under § 314(a).

4 Indeed, the August 2018 Update to the Office Patent Trial Practice Guide,

83 Fed. Reg. 39,989 (Aug. 13, 2018) (“Trial Practice Guide Update”), invites parties to address additional factors that may bear on the Board’s discretionary decision to institute or not institute under §§ 314(a) and 325(d). Trial Practice Guide Update 11, 13.

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IV. CONCLUSION

Taking account of the information presented in the Petition and the

Preliminary Response, and the evidence of record, we exercise our

discretion under §§ 314(a) and 325(d) and deny institution. Accordingly, the

Petition is denied, and no trial is instituted.

V. ORDER

In consideration of the foregoing, it is hereby:

ORDERED that the Petition is denied, and no trial is instituted.

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PETITIONER:

William Mandir wmandir@sughrue.com John Rabena jrabena@sughrue.com Yoshinari Kishimoto ykishimoto@sughrue.com

Fadi Kiblawi fkiblawi@sughrue.com PATENT OWNER:

James Haley james.haley@hglaw.com Joshua Van Hoven joshua.vanhoven@hglaw.com